27 Oct
2019

The Trump Trademarks; Uber exclusive interview; Rubik’s Cube decision reaction; counterfeit hotspots revealed; plus much more.

Everything we covered on WTR over the past seven days – and all you need to know from the world of trademarks to set yourself up for the start of another busy week.

MONDAY 21st October

While a relatively young brand, Uber manages the full range of IP risk – from phishing to genericism. WTR sat down with Raphael Gutierrez, director of intellectual property, to get the inside track on how the company approaches its brand management and enforcement strategies. Read more here.

We noted that time is running out to make nominations for the 2020 WTR Industry Awards and WTR 300 projects, which recognise the work undertaken by in-house professionals across the globe. Nominate now and be in with a chance to win a free place at an upcoming WTR event. Read more here.

TUESDAY 22nd October

China’s State Administration for Market Regulation has released new provisions on the regulation of trademark applications, expanding on how bad-faith filings will be defined and tackled – with applicants, agencies and the IP authorities all coming under scrutiny. Read more here.

News outlets in Mexico have focused on the use of expressions of folklore by fashion brands. In this guest post, a local expert argues that, with companies currently operating on the right side of the law, the role of protecting these expressions against misuse belongs to the state. Read more here.

A new study from Incopro has revealed the regularity of sites selling counterfeits being included in Google search results. The company is now calling on the search engine giant to comply with de-indexing requests for such sites. Read more here.

In our Tuesday news digest, we looked at Kanye West being denied a trademark for the term ‘Sunday Service’, adidas prevailing in Japan, the UK Intellectual Property Office notifying users of planned maintenance after Brexit, and much more. Read more here.

WEDNESDAY 23rd October

For the third year running, Baker McKenzie has topped a brand index of the top mainland European law firms. Market analysis from Acritas has found that the most successful brands come from global firms focusing on Germany at a time when much domestic growth has stalled. Read more here.

In the latest instalment of our series on marketplaces that reportedly engage in the trade of counterfeit goods, we headed to the Southeast Asian nation of Cambodia. Read more here.

THURSDAY 24th October

An exclusive WTR investigation has revealed the global scale of the trademark portfolio built up by US president Donald Trump and his family – with one commentator describing the level of activity as “unprecedented”. Read more here.

The General Court has confirmed the cancellation of the EU trademark consisting of the shape of the Rubik’s Cube. Speaking to WTR, one legal expert contends that the decision creates legal uncertainty for 3D marks that are less well known than the Rubik’s Cube. Read more here.

The likes of Apple, Dunkin’ Donuts, Microsoft and T-Mobile have all used third-party brands in domain names as part of creative marketing campaigns. Stephen Jadie Coates of Coates IP explores the dos and don’ts of using a competitor’s mark in a domain name. Read more here.

FRIDAY 25th October

In this week’s company data analysis, we turned our attention to Diageo, which puts brand building at the core of its business and succeeds due to its canny targeted marketing efforts. Read more here.

Brands warned over political stances, Amazon highlights investment in consumer safety, cybersquatting cases on the rise, and much more, featured in our Friday round-up. Read more here.

Plus, we published 10 Legal Update articles, examining key trademark decisions from across the globe:

  • Likelihood of confusion: new determining factor is brought into play (Argentina). Read more here.
  • Applicants for PINKIES trademark could not put a ring on it (United Kingdom). Read more here.
  • Meso v Liberty: Bombay High Court upholds ‘common to the trade’ defence (India). Read more here.
  • DURAX case: Uruguayan mark cancelled due to reputation of Argentinean brand and owners’ bad faith (Uruguay). Read more here.
  • General Court considers requirements for proving that coexistence is based on absence of likelihood of confusion (European Union). Read more here.
  • EBAY recorded as a well-known trademark (Turkey). Read more here.
  • UDRP: prior trademark rights are not always a decisive factor (International). Read more here.
  • Is FITNESS descriptive? General Court considers implications of allowing new evidence regarding descriptiveness before boards of appeal (European Union). Read more here.
  • Technological developments widen scope of admissible evidence in opposition proceedings (Turkey). Read more here.
  • Good news for trademark owners and practitioners: new tribunal for opposition matters inaugurated (Nigeria). Read more here.

 

Trevor Little

Author | Editor

[email protected]

Trevor Little